Ex Parte Shang

Board of Patent Appeals and Interferences

Oct 12, 2007

10104386 (B.P.A.I. Oct. 12, 2007)

The opinion in support of the decision being entered 1
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today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PING SHANG
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Appeal 2007-1281
Application 10/104,3861
Technology Center 2600
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Decided: October 12, 2007
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Before KENNETH W. HAIRSTON, ALLEN R. MACDONALD, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, C., Administrative Patent Judge.

DECISION ON APPEAL

1 Filing date: March 21, 2002. The real party in interest is SAE Magnetics
(H.K.) Ltd.
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of claim 1 entered November 2, 2005. We have jurisdiction under
35 U.S.C. § 6(b).
Appellant invented a reverse type of HGA (head gimbal assembly) by
means of a new type of FPC (flex print cable) design. (Specification 3:26-
27).
The appeal contains only one claim, claim 1. Claim 1 is reproduced
below:
1. A reverse type of HGA comprising a suspension, a flexure, a
modified FPC (or flex cable) and a slider, some traces with related bond
pads on an FPC used as signal lines, and some bump pads on said slider used
as slider MR element terminals;
wherein a bonding area of the slider of the reverse type of HGA
is provided on the opposite side of trace connections for the traces.

The Examiner entered a Final Rejection on November 2, 2005 with
the following rejection which is before us for review:
Claim 1 is rejected under 35 U.S.C. § 102(e) as being anticipated by
Zeng.
Appellant appealed from the Final Rejection and filed an Appeal Brief
(Br.) on June 2, 2006. The Examiner mailed an Examiner’s Answer
(Answer) on August 22, 2006. Appellant filed a Reply Brief (Reply Br.) on
October 23, 2006.

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We AFFIRM.2
We also use our authority under 37 C.F.R. § 41.50(b) to enter a new
ground of rejection for claim 1.

REFERENCE
The reference relied upon by the Examiner in rejecting claim 1 is as
follows:
Zeng3 US 6,697,216 B2 Feb. 24, 2004
(Filed Jul. 31, 2001)

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting claim 1 based on anticipation. The issue specifically turns on
whether Zeng expressly or inherently discloses a bonding area of the slider
of the reverse type of HGA is provided on the opposite side of trace
connections for the traces, as set forth in Appellant’s claim 1.

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

2 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).
3 See Examiner’s Answer page 3, item 8. Appellant and the Non-Final
Rejection dated March 4, 2005 cites Zeng et al. (U.S. Pat. 6,735,051) which
is a divisional of US Patent 6,697,216.
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Claim Construction
1. The Specification discloses that “the bonding area of the slider 40
of the reverse type of HGA is provided on the opposite side of the flexure to
that of the conventional HGA.” (Specification 5:27-29).
2. The Specification does not provide a lexicographic definition for
the term “bonding area.”
3. The ordinary and usual meaning of “bonding area” is any area
where an attachment is formed.

The Invention
4. Appellant states at page 5, lines 22-24 of the Specification that
“[s]ome traces 31 with associated bound pads 32 on the FPC 30 are used as
signal lines, and some bump pads 41 on the slider 40 [are] used as slider MR
element terminals, as shown in Figs. 2.1 and 2.2.”

Zeng
5. Zeng describes that “[a] slider 240 is attached to a gimbaled region
(obscured by the slider 240) of the flexure 350.” (col. 7, ll. 15-16).
6. Zeng describes that “[t]he flexure legs 390, nearto the flexure distal
end 360, support a gimbaled region 370 to which the slider (not shown)
would be attached.” (col. 8, ll. 61-63).
7. Zeng further states at column 9, lines 5-6, that “the slider
240 is attached to the gimbaled region 370 using an adhesive.”
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8. Zeng further discloses an embodiment whereby “…in FIG.
14, two adhesive layers 530 are used, rather than the single adhesive
layer that would ordinarily attach the slider 240 to the gimbaled
region 370 of the flexure.” (col. 11, ll. 8-11).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Analysis of whether a
claim is patentable over the prior art under 35 U.S.C. § 102 begins with a
determination of the scope of the claim. We determine the scope of the
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827,
1830 (Fed. Cir. 2004). The properly interpreted claim must then be
compared with the prior art.
Claims are given their broadest reasonable construction “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364, 70 USPQ2d at
1830.

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ANALYSIS
Claim Interpretation
Appellant states that the bonding area of the slider is provided on the
opposite side of the flexure to that of the conventional HGA (FF 1). To
illustrate this feature, Appellant’s Fig. 1.1 illustrates a conventional FSA
type of HGA configuration which shows bound pads 32 and bump pads 41
being located on the left side of the slider 40, whereas Appellant’s Fig. 2.1
illustrates the bump pads 41 and the bound pads 32 being located on the
right side of the slider 40.
The language of original claim 1 is consistent with Appellant’s
disclosure. However, this original language was changed to “is provided on
the opposite side of trace connections for the traces.” For reasons addressed
below, we find this new language to be misdescriptive of the invention.
However, for purposes of addressing the claim language as presented to us,
we shall interpret the meaning of “bonding area” as used in claim 1.
The Board is required to use a different standard for construing claims
than that used by district courts. We have held that it is error for the Board
to “appl[y] the mode of claim interpretation that is used by courts in
litigation, when interpreting the claims of issued patents in connection with
determinations of infringement and validity.” In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989); accord In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
(“It would be inconsistent with the role assigned to the PTO in issuing a
patent to require it to interpret claims in the same manner as judges who,
post-issuance, operate under the assumption the patent is valid.”). Instead,
as we explained above, the PTO is obligated to give claims their broadest
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reasonable interpretation during examination. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d at 1369, 70 USPQ2d at 1834 (Fed. Cir. 2004).
Claim 1 recites “wherein a bonding area of the slider of the reverse
type of HGA is provided on the opposite side of trace connections for the
traces.” Appellant does not provide a definition for the term “bonding
area.” (FF 2). As such, it is our view that the broadest reasonable
interpretation of “bonding area” can be any area where an attachment is
formed. (FF 3).
Furthermore, it is our view that claim 1 does not limit the “bonding
area” to only the opposite side from the trace connections for the traces. All
that is required by the claim language is that the bonding area include an
area opposite to the trace connections.

Anticipation Analysis
Based on our findings and those of the Examiner, it is our view Zeng
anticipates the subject matter of claim 1.
Appellant contends that “the description of [Zeng’s] Figure 12 does
not teach, suggest or disclose ‘…the bonding area of the slider (40) of the
reverse type of HGA is provided on the opposite side of the trace
connections,’ as specifically recited in the embodiment of claim 1.” (Br. 4)
(emphasis in original). Appellant further contends that “Zeng’s disclosure of
Figure 14 does not teach, suggest or disclose ‘…the bonding area of the
slider (40) of the reverse type HGA is provided on the opposite side of the
trace connections’ anywhere, as specifically recited in the embodiment of
claim 1.” (Br. 4-5) (emphasis in original). Appellant also contends that
“[a]n examination of [Zeng’s] Figure 11 shows both sets of slider
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termination pads 430 are placed on the same side as the trace connections
440, and therefore not ‘provided on the opposite side of the slider compared
to a conventional slider.’” (Reply Br. 2) (emphasis in original).
Zeng discloses a slider being attached to a gimbaled region of the
flexure (FF 5-6) using an adhesive (FF 7). Zeng further discloses that two
adhesive layers could be used, rather than a single layer that would
ordinarily attach the slider to the flexure (FF 8). It is our view that Zeng’s
adhesive layer 530 can be interpreted as a “bonding area.”
In other words, Zeng discloses a bonding area of the slider that
includes adhesive layers 530. As illustrated in Zeng’s Fig. 14, the adhesive
layer 530 is provided both on the opposite side of trace connections and on
the same side of trace connections. Given that the claim language does not
limit claim 1 to only providing the bonding area on the opposite side…,
Zeng reads on providing a bonding area of the slider on the opposite side of
trace connections for the traces (in addition to other areas).

NEW GROUND OF REJECTION
In addition to affirming the Examiner’s rejection of claim 1, this
decision, pursuant to our authority under 37 C.F.R. § 41.50(b), contains a
new ground of rejection.
Claim 1 is rejected under 35 U.S.C. § 112, second paragraph, as being
misdescriptive, and therefore vague and indefinite. Claims are considered to
be definite, as required by the second paragraph of 35 U.S.C. § 112, when
they define the metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530 F.2d 956, 958
(CCPA 1976).
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Claim 1 recites the limitation, wherein a bonding area of the slider of
the reverse type of HGA is provided on the opposite side of trace
connections for the traces.” This limitation is unclear because Appellant’s
Specification fails to disclose such a limitation and instead discloses that the
traces 31 are associated with (connected to) bound pads 32 (FF 4) which are
clearly on the same side as the bump pads 41.
The Examiner’s position is “that Appellant’s elements 31 in Figure
2.1 are defined in the specification as traces (page 5, line 22) not trace
connections. The ends of the traces are at elements 32, defined in the
specification as bound pads (page 5, line 22)…” (Answer 4). We agree.
As noted above, Appellant’s Specification clearly discloses that the
traces 31 have associated bound pads 32. (FF 4). As such, the “trace
connections” can reasonably be interpreted as including the bound pads 32.
Appellant’s Fig. 2.1 illustrates that the bump pads 41, which bond the slider
40, and the bound pads 32, which connect the traces, are positioned on the
same side of the slider 40, not on opposite sides. Thus, we find the language
of claim 1 to be misdescriptive of the invention.

37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b) as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record …

CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claim 1 as being anticipated under 35 U.S.C. § 102(e) over Zeng.
Thus, claim 1 is not patentable.
Since we have entered a new ground of rejection against claim 1, our
decision is not a final agency action.

DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claim 1 under § 102(e).
We have entered a new ground of rejection against claim 1 under 37
C.F.R. § 41.50 (b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

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37 C.F.R. § 41.50(b)

ce

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